WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sterling Jewelers Inc. v. Sterling Jewelers, Inc. and Domain Traffic
Case No. D2002-0772
1. The Parties:
The Complainant is Sterling Jewelers, Inc., a corporation incorporated under the laws of the state of Ohio, United States of America. Its principal place of business is 375 Ghent Road, Akron, OH 44333, United States of America.
The Respondents are Sterling Jewelers, Inc. (the Complainant, for purely formal reasons explained below) and Domain Traffic, having an address of #800 � 15355 24th Avenue, Suite 211, Surrey, BC V4A2H9, Canada.
2. The Domain Name and Registrar:
The domain name in this dispute is:
The registrar with which the domain name is registered is:
Intercosmos Media Group, Inc. d/b/a
directNIC.com
650 Poydras Street
Suite 2311
New Orleans, LA 70130
United States of America
3. Procedural History:
On August 19, 2002, the WIPO Arbitration and Mediation Center (the Center) acknowledged receipt of a Complaint sent by the Complainant which named Respondent Domain Traffic and was received by the Center on August 16. The Center sent a request for Registrar verification and received a reply from the Registrar Intercosmos Media Group, Inc. that the registrant the Registrar listed was not Respondent Domain Traffic but, rather, was the Complainant, Sterling Jewelers, Inc. The Registrar�s records showed August 16, 2002, (the date the Complaint was sent) as the last update of the Registrar�s records. Apparently, the registrant changed the contact information to reflect ownership by Sterling Jewelers, but no transfer of the domain name to the control of Sterling Jewelers occurred.
On August 28, the Complainant sent an e-mail to domaintraffic@, which was the e-mail contact information in the Whois database when the Complaint was drafted, requesting the account name and password for the domain name. No response was received.
On September 9, the Registrar confirmed that the domain name was registered to Domain Traffic but listed in the ownership of Complainant Sterling Jewelers.
On September 19, the Complainant filed an Amended Complaint naming Respondent Domain Traffic and itself as Respondents. From this point forward, "Respondent" shall refer to Respondent Domain Traffic.
On September 23, a warning was received that the e-mail sending the Complaint to the Respondent has not been received by the Respondent.
On September 28 and on October 23, 2002, one of the attempts to serve the Complaint on the Respondent by e-mail has not been returned. Furthermore, a Federal Express receipt shows that the complaint was delivered at one of the addresses of the Respondent and that the Center satisfied its notice obligations under the UDRP.
On October 31, 2002, the case was transferred to the panel for a decision.
4. Factual Background:
The Complainant alleges that it is the owner of U.S. Service Mark Registration No. 1,872,975 for JARED THE GALLERIA OF JEWELRY, that the mark is used in association with retail jewelry store services in International Class 42, and that the mark has satisfied the requirements as set forth in the Lanham Act, Section 15 (15 U.S.C. �1065). As such, Complainant alleges the registration is incontestable and constitutes conclusive evidence of the Registrants' ownership and exclusive right to use this mark.
The Complainant alleged that it has continuously utilized the mark in connection with jewelry store services since 1993 and "has expended considerable efforts in promoting the renown and reputation associated with this mark." The Complainant further states that "the mark has become synonymous with high quality in regard to jewelry store services."
The Complainant also states that the "sole use of the domain has been to offer a search page for a variety of goods. This search page is used as a means for providing �pop-up� advertisements to Internet users who arrive at this domain."
5. Parties Contentions:
The Complainant�s contentions are as follows:
a. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b. the Respondent has no rights or legitimate interests in respect of the domain name; and
c. the domain name was registered and is being used in bad faith.
The Respondent failed to respond.
6. Discussion and Findings:
As a preliminary matter, since the Respondent has not submitted a response, the panel must decide whether a default should be entered, or whether the Complainant�s submissions should be reviewed. There does not appear to be a statement in the various rules and contracts governing this proceeding that would put a Respondent on notice that the failure to respond would remove any burden of proof from the Complainant. At least one previous panelist has addressed the issue and felt that the essential elements of the claim should be reviewed to confirm they had been met. RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (WIPO December 11, 2001). This panel agrees that such a course is appropriate.
In order to prevail, therefore, the Complainant must prove the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Uniform Dispute Resolution Policy, Paragraph 4(a). There are three "safe harbors" for the Respondent:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Registrant�s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to [the Registrant] of the dispute, [the Registrant�s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Registrant] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Registrant has] acquired no trademark or service mark rights; or
(iii) [the Registrant is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Uniform Dispute Resolution Policy (the "Policy"), Paragraph 4(c).
A. Complainant�s Elements of Proof:
1. Is the domain name identical or confusingly similar to a trademark or service mark in which the Complainant has rights?
Other panels have stated that the application of this factor is an objective one that requires only comparison of the trademark to the domain name. Such a comparison may be sufficient in cases in which the Complainant establishes broad trade mark rights, either through significant evidence of use, through registration of the terms of the domain name, or through significant evidence of fame or secondary meaning of the terms in the domain name. For example, incorporation of a registered trademark as a whole has been held to be sufficient to establish that a domain name is confusingly similar to the Complainant�s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, Case No. D2000-0253 (WIPO May 29, 2000) (finding that QUIXTAR and are legally identical).
In this case, however, the domain name, is not an incorporation of the whole trademark. Such an incorporation would be . Also, although the addition of descriptive or non-distinctive terms in the domain name does not aid the Respondent, RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (WIPO December 11, 2001), such is not the case here. Rather, the reverse is the situation. The trademark includes terms that are not in the domain name. Therefore, the domain name is not identical to the trademark, and the issue under this element of Complainant�s case is whether the domain name is "confusingly similar."
Regarding the evidence the Complainant brought forward on distinctiveness, secondary meaning, or fame, the Complainant�s entire discussion of this element of proof is as follows:
The domain name is confusingly similar to the Complainant�s service mark because it incorporates a substantial portion of the mark. The Complainant has continuously utilized the mark in connection with jewelry store services since 1993 and has expended considerable efforts in promoting the renown and reputation associated with this mark. The mark has become synonymous with high quality in regard to jewelry store services. The domain name is at least confusingly similar to the registered mark of the Complainant because it provides a commercial impression that is almost identical, if not identical, to that of the registered mark.
No declaration or other testimony and no documentary support was submitted in support of these statements. The first statement can be reviewed, somewhat, by the panel. The rest cannot.
The Complainant has not cited any authority that a factor for consideration in whether the domain name is confusingly similar is whether a "substantial portion" of the mark has been included in the domain name, the panel will make that presumption for the present analysis. It is clear that at least some portion was incorporated � "jared" and "jewelry." The panel will presume that a "substantial portion" test does not require that the "dominant" portion be incorporated; it is at least theoretically possible that a non-dominant portion of a mark could be considered "substantial." Nevertheless, identification of the dominant portion and evidence of its incorporation are relevant to the inquiry. The tests are clearly related; they are addressed to the memorable portions of the mark and those portions that, together or separate, may have secondary meaning.
The term "jewelry" was disclaimed in the US registration. The other portions of the mark that one might label "substantial" are the name "jared" and the word "galleria." Taking the second portion first, the American Heritage College Dictionary, Third Edition, defines "galleria" as "A roofed passageway or indoor court usu. containing a variety of shops or businesses." This is not merely a descriptive term for a retail store, and the domain name does not include it. Therefore, there is at least some evidence that a significant and perhaps "substantial" portion of the mark is not incorporated in the domain name. Whether another "substantial" portion is incorporated will also be considered.
The Complaint does not assert that there is any particular meaning to the word "jared," nor does a review of the American Heritage College Dictionary, Third Edition, show one. However, it is used as a surname. For example, it appears in over 100 hits in a search on S. As a surname, although it may be more conspicuous, it is not necessarily the "dominant" portion of the mark. Without more evidence, and without the other portion that the panel considers significant (the term "galleria") the panel does not feel it can be said that a substantial portion of the mark (or the dominant portion) has been incorporated into the domain name. "[U]ltimately, the weight to be given each word is a judgment call, best suited to the fact-finder." A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 218 (3d Cir. 2000).
The Complainant has not advocated that the factors under US law for determining likelihood of confusion should be used, although Complainant asserts that US principles of law apply. The panel considers such factors to be appropriate for consideration in this case. Based on the analysis above, the panel gives very little weight to the similarity of the marks, due to the lack of evidence relating to the dominance or secondary meaning of the terms that are incorporated in the domain name.
The factors in the US law for consideration in determining whether there is a likelihood of confusion are expressed in a number of ways. For example, one appellate court lists them as: (1) the type of trademark allegedly infringed, (2) the similarity between the two marks, (3) the similarity of the products or services, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the defendant�s intent, (7) any evidence of actual confusion, and (8) any other relevant factors. Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 664 (5th Cir. 2000). Having already addressed the second factor, the panel now considers the remaining seven.
The panel presumes that the mark is at least suggestive, if not arbitrary, and there is a statement by the Complainant (although unsupported by testimony and no specific recitation of use to support it), that there has been continuous use since 1993 and that there have been "considerable efforts" in promotion of the mark. Based on these factors, the panel finds that the trademark as a whole is not weak.
The Complaint also states that the mark is "renown" and that it "has become synonymous with high quality in regard to jewelry store services," but these statements are purely conclusory and unsupported by evidence. They are insufficient alone to establish that there is strength to the mark. Although normal rules of evidence may not apply, the practice of advocates over-stating the facts is too widespread and has gone on for too many thousands of years for the panel to presume from these unsupported statements that they are accurate. They may be true in this case, but there is no evidence to support them.
These statements address evidence that is different from the statements the panel accepts, although with reservation, that there has been use since 1993 and that the use has been "considerable." It is not unreasonable in this type of proceeding to take a party at their word when the fact the party states is within the personal knowledge of the party. The panel would prefer, and it would be more credible, and it would help the Complainant�s case, if there were more than just the statement that there had been continuous and "considerable" use. Nevertheless, those facts are within the personal knowledge of the party asserting them, and the panel will accept them as true.
On the other hand, whether those efforts have resulted in any renown or reputation, good or bad, is normally not within the party�s personal knowledge. There should be some evidence of some sort to support what is otherwise a purely conclusory statement about a fact clearly not within the personal knowledge of the party making the statement; or, at least, there should be some specificity. For example, how "considerable" was the use? How widespread? In what media?
With so little evidence, the panel gives no weight, either for the Complainant or the Respondent, to the type or strength of the trademark.
As to the similarity of the goods and services, here there is some evidence. For example, the term "jewelry" is used in the trademark and the domain name. At least some of the products on Respondent�s web page were listed under a category of jewelry. Therefore, the panel finds that there is a similarity of at least some of the services advertised and sold through the Respondent�s use of the domain name. This factor weighs somewhat in favor of the Complainant.
The next factor relates to the channels of trade. The Complainant�s channels are, apparently, stores. That is not the same as the Internet site the Complainant described for the Respondent. Therefore, this factor weighs strongly in favor of the Respondent.
As to the remaining factors ((5) the identity of the advertising media used, (6) the defendant�s intent, (7) any evidence of actual confusion), the Complainant submitted little or no direct evidence. The Complainant was detailed in its arguments regarding why an inference of bad faith should be applied, although the intent of the Respondent is not an issue on which a Complainant would normally have direct evidence. On the other hand, the Complainant should have some direct evidence regarding the advertising media and regarding actual confusion. The panel presumes the Complainant had none, other than the web site of the Respondent.
As described below, the panel finds that the Complainant failed to make a convincing demonstration of intent, although the panel does infer that there is "bad faith," at least as that term is used under the UDRP and panel decisions interpreting the UDRP. Therefore, very little weight is given to the intent element. However, as to the elements of advertising media and of actual confusion, the lack of evidence that should have been in the Complainant�s possession causes the panel will presume these factors weigh in favor of the Respondent.
There is another factor to be considered. That is the apparent attempt by the Respondent to transfer the domain name to the Complainant. The panel views this act as at least some acknowledgment by the Respondent of some similarity. However, it is not possible conclude the Respondent thought there was confusing similarity; it could be the Respondent simply did not want to spend the resources to argue the point. On the other hand, the Respondent�s failure to participate in these proceedings should also be considered as at least some evidence of a tacit admission that there is at least confusing similarity.
The panel is unaware of other factors that should be considered relating to whether there is "confusing similarity."
From those that the panel has considered, although a close call, the panel finds that the Complainant has shown that the domain name is confusingly similar to a service mark in which the Complainant has rights.
2. Does the Respondent have rights or legitimate interests in respect of the domain name?
The Complaint effectively makes three arguments regarding this element of proof. First, it states in a conclusory fashion that the Respondent has not been commonly known by the domain name. No evidence, however, was cited on this point. The next argument is that there is no bone fide offering of goods and services through the Respondent�s web site. However, the Complaint itself states that goods are offered through the Respondent�s web site. The panel considers a "search page" of a "variety of goods" can be a bone fide offering of goods. The third argument is that there is no evidence of the Respondent making "use of or demonstrable preparation to use" the domain name in connection with the offering of goods that was made. However, lack of evidence is not sufficient to carry a burden of proof. In general, the paucity of evidence submitted on this second element of proof makes the decision on this point also close.
One consideration on this point is to compare the domain name to the particular trademark in which the Complainant established it has rights. Here, the domain name is not identical to the Complainant�s registration; and, although the domain name does use some of the terms in the registration, it does not use all of the significant terms. Further, the use of the terms in the domain name to offer the goods the domain name suggests (jewelry) is a factor in favor of the Respondent. Also, the use of a family name (in which there has been no showing of acquired distinctiveness or secondary meaning) does not, necessarily, require a finding in favor of the Complainant under this factor.
Further still, the Complainant has established its rights in the trademark only for the "jewelry store services" (the description of goods and services in the US Federal Registration). That registration is the only evidence Complainant provided regarding its rights. It did make a number of conclusory arguments, without supporting evidence, regarding other goods and services; but, as explained previously, the panel does not consider mere argument to be sufficient. Had there been some evidence other than merely conclusory argument, a finding for the Complainant on this point might be made easier.
On the other hand, the Panel sees nothing on the Respondent�s web page that implies that "jared" is used as either a trademark of the Respondent, a descriptive term, or some other use of the term "jared" that would be considered "legitimate" in view of the confusingly similar nature of the domain name to the trademark. Further, the Respondent�s actions in changing the Registrar�s database is at least some evidence of an intent to waive or abandon the Respondent�s claim to the domain name. Likewise, the Panel considers it appropriate to consider this action as at least some evidence of an admission of a lack of legitimate interest in the domain name.
On the particular facts of this case, giving particular weight to the affirmative action of the Respondent in changing the Registrar�s database upon receipt of the Complaint, coupled with the lack of response to the Complaint, the Panel finds for the Complainant on this element.
3. Was the domain name registered and used in bad faith?
As to the standards for finding bad faith, the Policy says:
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Registrant has] registered or [the Registrant has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Registrant�s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or
(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [the Registrant�s] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Registrant�s] web site or location or of a product or service on [The Registrant�s] web site or location.
Uniform Name Dispute Resolution Policy, Paragraph 4(b).
The Complaint does not recite any evidence tending to show that the Respondent registered the domain name for the purpose of transferring it. Bad faith is not established under this factor.
There is also no evidence of intent to prevent the Complainant from using the reflecting the mark in a corresponding domain name. As mentioned above, the domain name does not correspond to the mark. It includes some, but not all, of the words that are in the mark. Bad faith is not established under this factor, either.
Nor is there evidence that the Respondent attempted to disrupt the business of a competitor. As with the others, bad faith is not established by this factor.
Regarding the final factor, the Complainant says that the use of the domain name to provide a search page shows bad faith as an attempt to attract users to the web site by creating likelihood of confusion with the Complainant�s mark. As mentioned above, the panel sees the providing of a search page to be a legitimate commercial activity. Therefore, even though there is a likelihood of confusion, the panel will not infer bad faith on the part of the Respondent based on the use of the particular domain name in this case to direct users to a search page. If there had been some other evidence that the search page, itself, tended to suggest or confuse as to sponsorship, the decision might have been different on this point. However, the search page does not include such evidence, and the panel is not aware of other evidence on this point.
In addition to the factors Paragragh 4(b) details for consideration of whether the domain name was adopted in bad faith, Complainant argues that bad faith is to be inferred from the mere fact that the Complainant�s mark was registered in the United States. For this theory, Complainant relies on the effect of 15 USC Section 1072, regarding constructive notice under US law, and the panel decisions of Barney�s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 and J. Crew International, Inc. v. , WIPO Case No. Case No. D2000-0054. However, the Complainant overstates the holdings of the cited decisions.
First, in Barney�s, the panel stated:
As a matter of the United States trademark law, it must therefore be presumed that Respondent was on notice of Complainant�s rights in the BARNEY�S NEW YORK mark prior to registering the domain name . Complainant�s high profile presence in the retail market and the fame of Complainant�s mark would further tend to indicate that Respondent was aware of Complainant�s rights therein.
The "high profile presence" and "fame" of Barney�s mark, coupled with the US registration, were the factors cited for imputing knowledge of the trademark rights of the Complainant. As to imputing bad faith, this alone was not the total of the factors on which the Barney�s panel relied. The panel explicitly stated that it based the bad faith determination on the imputed knowledge of the trademark rights "together with a willingness to accept consideration for transfer of the domain name." (emphasis added)
In J. Crew, the majority of the panel held that there was constructive notice under US law. The present panelist does not necessarily agree, however, that the mere registration of a US trademark should be used to infer bad faith in the present type of dispute. First, the constructive notice provision of the US law was not designed specifically to apply to domain name disputes. Section 1072 merely states that there is constructive notice of a "claim of ownership." It does not state that bad faith under any other provision of US law can be presumed merely because of registration. Further, there are other arguments against application of constructive notice for purposes of the present proceeding, as is evidenced by the dissenting opinion in the J.Crew case. In any event, whether the majority in J. Crew was correct is not an issue that the present panelist must decide, because this case is different. Both the Complainant and Respondent were US entities in J. Crew. In this case, the Respondent is Canadian. This panelist is not prepared to hold that the constructive notice provisions of US trademark law apply to a Canadian.
The Complainant asks the panel to apply constructive notice here, in spite of the fact that the Respondent is Canadian, on the theory that the Respondent "chose to register this domain name with a Registrar in the United States, and thereby purposefully avail[ed] itself of the benefits of doing business in the United States." However, there was no discussion and no authority cited that would guide the panelist in determination of the scope of personal jurisdiction to which the Respondent has arguably subjected itself.
Other panels have addressed similar situation. For example, in RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (WIPO, December 11, 2001), the panel stated:
. . . Respondent had constructive notice of the RED ROOF Trademarks, as a trademark search on the date of the registration of the Domain Names would have revealed Complainant�s registrations the United States. Actual or constructive knowledge of the Complainant�s rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000) (Respondent�s knowledge of Complainant�s mark at the time of registration of the domain name suggests bad faith).
However, a review of the opinions RRI cites fails to show that those panels, in fact, relied on a US registration for constructive notice or for bad faith. For example, in Expedia, the panel stated:
The Respondent first registered the domain name in May, 1999, long after the Complainant established rights and web publicity in the mark EXPEDIA for travel-related services. In the absence of contrary evidence, the Panel finds that the Respondent knew of or should have known of the Complainant�s trademark and services at the time it registered the domain name , given the widespread use of the Complainant�s EXPEDIA website.
Thus, the Expedia panel did not rely on constructive notice based on a US trademark registration. The Expedia panel relied on the substantial evidence of "widespread use." We have no specific evidence of widespread use in this case; we have only the conclusionary, unsupported statement by Complainant�s advocate that there has been "considerable" use. The panel is unwilling to rely on such a statement, alone, to infer bad faith.
In the Document Technologies case, the panel stated:
More relevant to the bad faith issue is Complainant's allegation, albeit on information and belief, that Respondent knew of Complainant's trademark rights in the mark HTML EASE at the time it registered the Domain Name. If correct, and given that the parties are direct competitors, this fact would go far to suggest bad faith. In reply, the Respondent asserts in a sworn statement that it "had no knowledge of dTech's intent to use HTML EASE as a trademark". The Panel does not consider that this assertion, of itself, compels it to conclude that the Respondent did not register in bad faith. If the evidence discloses circumstances that are consistent with a Complainant's allegation that the Respondent registered the domain name in bad faith, a finding of bad faith may be made notwithstanding a sworn statement from the Respondent that it did not know of the Complainant's trademark, or did not know that Complainant intended to use its mark as a trademark. In this case, however, the Complainant has not shown evidence of such circumstances. For example, there is no documentary evidence that someone from the Respondent actually did visit, or is likely to have visited, the Complainant's website in the period prior to the registration of the Domain Name, or that the Complainant's promotional literature actually was, or is likely to have been, received by the Respondent during that period.
Therefore, as the parenthetical in the RRI Financial, Inc. opinion notes, the Document Technologies panel did not rely on the US registration. The Document Technologies panel was addressing the implications of actual knowledge, not constructive notice.
In summary, the panel declines in this case to infer bad faith of a Canadian Respondent based on a US statute stating that registration is constructive notice of a "claim of ownership."
The Complainant also asks the panel to infer bad faith from the lack of response by the Respondent to the letters of the Complainant. It is appropriate to take a lack of response into account on the theory that the Respondent has a duty to participate in this proceeding. Mars, Incorporated v. Vanilla, Ltd., D2000-0586 (WIPO September 1, 2000). However, after the dispute was made known to the Respondent, the ownership of the domain name was changed to list the Complainant. Therefore, there can be a valid argument made that the Respondent was not acting in bad faith.
The Complainant also argues that bad faith can be inferred due to alleged breaches of the registration agreement with the service provider . The first alleged breach is that the Respondent had represented and warranted that, to the best of its knowledge and belief, neither the registration of the domain name, nor the manner in which it was directly or indirectly used, infringed the legal rights of the third party. However, the Complainant has failed to show that the Respondent had a knowledge or belief contrary to this representation and warranty. Constructive notice of a claim of ownership, even if applicable, would not be in violation of this warranty.
The next alleged breach is Respondent�s "responsibility to determine whether the registration violated the rights of others." However, there is no obligation of which the panel is aware that requires actual trademark searches before obtaining a domain name. Once there was actual knowledge of the trademark, the actions of the Respondent in changing the registration information to list the Complainant as the registrant of the domain name the date it received the Complaint can be interputed as acts consistent with determining whether the registration violates the rights of others. Of course, as discussed above, the panel cannot come to that conclusion, either; but it is not, alone, evidence of bad faith.
The Complaint also alleges that "false contact information" in the registration agreement is a violation of the warranty under the Policy. In the case the Complainant relies upon, there was a finding that the Respondent had taken "deliberate steps to ensure that its true identity" could not be determined. We do not have significant evidence of such "deliberate steps" here. The Complainant was able to find a telephone number for the Respondent. The additional three digits listed in the telephone number have not been shown to make the number inoperative. Perhaps they were an extension. Or, perhaps, whoever filled out the form made a mistake. In any case, the Complainant was able to find the Respondent and use the number in the agreement.
Next, the Complaint states that bad faith should be presumed from the use of a mailbox service. However, the Complaint also notes that it is not necessarily an illegitimate business activity to receive mail at a private mail business.
Accordingly, the panel will not infer bad faith based solely on the inaccurate although, apparently, sufficient information.
Although not argued by the Complainant, the Respondents� actions in editing the database can be interpreted as an abandonment or waiver of its right for a finding of bad faith. That, coupled with the lack of any response, while perhaps not determinative in all cases, can be interpreted here as a tacit admission of bad faith. The panel believes that an equitable resolution to this case requires such an interpretation.
Taking into consideration the particular facts of this case, the panel holds that the combination of factors discussed above, although none standing might be held to constitute a prima facia showing of bad faith, do require an inference of bad faith in this case.
B. Safe Harbors
The only safe harbor under Paragraph 4(a) of the policy that might apply in this case is the first � namely that, before any notice to the Registrant of the dispute, the Registrant�s use of the domain name was in connection with a bona fide offering of goods or services. As discussed above, the web page would appear to be a bona fide offering. However, as discussed above, the Respondent�s actions in changing the Registrar�s database show an intent to waive or abandon its claim to the domain name. Accordingly the panel declines to hold for the Respondent on this point.
7. Decision
For the foregoing reasons, the panelist decides:
(a) That the domain name registered by the Respondent is identical to a trademark in which the Complainant has rights.
(b) The Respondent has no right or legitimate interest in respect of the domain name.
(c) The domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the panelist requires that the registration of the domain name be transferred to the Complainant.
Gordon T. Arnold
Sole Panelist
Dated: November 13, 2002
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